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DC Comics v. Oliveri
Opp. No. 91219587 (T.T.A.B. Aug. 8, 2017)

The Firm prevailed on behalf of longtime client DC Comics ("DC") before the Trademark Trial and Appeal Board (the "Board") in an opposition involving THE FLASH character and related trademarks. DC had opposed an application to register the mark FLASH TEC together with a lightning bolt design in connection with clothing. In a lengthy decision dated August 8, 2017, the Board held that THE FLASH was "a valuable intellectual property asset with marketplace strength" and found that FLASH TEC was likely to cause confusion.

The Firm prevailed in an opposition brought by a company affiliated with the seminal hip-hop group Cypress Hill against an application to register the mark GREENE THUMB in connection with music based on our client's rights in the mark DR. GREENTHUMB.

On behalf of client Athleta, the Firm prevailed in an opposition against applications to register ATHLETIKA and ATHLETIKA SP in connection with sports medicine products. The claim was based on Athleta's rights in the ATHLETA mark for women's fitness and active wear.

On behalf of DC Comics, the Firm prevailed in an opposition against an individual's attempt to register SUPER DOGS in connection with a contemplated entertainment series and merchandising program. DC relied on its SUPERMAN family of trademarks, including those relating to the KRYPTO THE SUPERDOG character.

The Firm, on behalf of our client Cartier International A.G., prevailed in an opposition proceeding before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Cartier had opposed an application to register the mark TRINITY in connection with leather handbags on the basis of likelihood of confusion with its own TRINITY mark for jewelry. The Board held that confusion was likely, finding that Cartier’s TRINITY mark was strong and that jewelry and handbags were related.

Following an evidentiary hearing, on behalf of client The Gap, Inc. and its Old Navy brand, the Firm was successful in defeating a motion for a preliminary injunction brought by plaintiff Hoop Culture, Inc. over its alleged EAT...SLEEP...BALL. trademark. The U.S. District Court for the Middle District of Florida held that the plaintiff did not show a substantial likelihood of success on the merits of its claims on either ownership of a valid mark - despite the fact that it had a federal registration - or likelihood of confusion. The Court also held that plaintiff failed to establish the requisite irreparable injury. This decision was affirmed by the U.S. Court of Appeals for the Eleventh Circuit.

On behalf of client DC Comics, the Firm prevailed in a decision by the U.S. Court of Appeals for the Ninth Circuit holding that the Batmobile, Batman’s famous car, was subject to copyright protection as a character. In reaching its decision, the Court set forth a new, three-part test for determining protection of a character appearing in comic books, television programs or films under the 1976 Copyright Act, independent of any specific work in which it has appeared and irrespective of whether it “lacks sentient attributes and does not speak.” Upon finding that the Batmobile met all of the necessary criteria, the Court then held that DC had the right to bring suit because it had reserved all merchandising rights when it granted licenses for the creation of the 1966 Batman television series starring Adam West and the 1989 Batman film starring Michael Keaton. In the alternative, because the 1966 program and 1989 film were derivative works of the original Batman comics, any infringement of those derivative works also gave rise to a claim for DC, the copyright owner of the underlying works. Finally, the Court found that the replica Batmobiles created by mechanic Mark Towle infringed DC's in the Batmobile as it appeared in the 1966 program and 1989 film. The Court also upheld the District Court’s refusal to allow Towle to assert a laches defense on DC’s trademark claims because the infringement was found to be willful. The U.S. Supreme Court denied Towle's petition for certiorari on March 7, 2016.

On behalf of our client Jack Wolfskin Ausrustung Fur Draussen GmbH, we obtained a reversal of a decision of the Trademark Trial and Appeal Board ("TTAB") at the U.S. Court of Appeals for the Federal Circuit. The TTAB had found that our client's application was likely to cause confusion with the appellee's registered mark, but the Federal Circuit held that the TTAB erred by improperly dissecting the appellee’s mark and by giving insufficient weight to voluminous evidence of third party use we submitted supporting our client's position. Following the decision, New Millennium filed a petition for certiorari in the U.S. Supreme Court. On behalf of Jack Wolfskin, we filed a brief opposing the petition. On January 25, 2016, the Supreme Court denied the petition and declined to hear the case, letting the Federal Circuit decision stand.

On behalf of plaintiff DC Comics in a claim for infringement of its Superman Shield trademark, the Firm was successful in defeating a motion to dismiss brought by defendant Mad Engine, Inc. on the ground that its use was parody.

On behalf of DC Comics, the Firm successfully opposed two applications to register GOTHAM BATMEN and a batwing design in connection with entertainment and business networking services. In sustaining the opposition, the Trademark Trial & Appeal Board held that BATMAN was "a famous mark in connection with . . . comic books and movies" and further that such "fame is transferred to a vast array of collateral or merchandising products that are purchased because they bear the BATMAN trademark; that is, consumers have come to associate the fame of BATMAN with the products bearing that mark."

In a precedential decision before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office (“TTAB”), the Firm successfully represented Chanel, Inc. in its challenge to a Canadian real-estate developer’s attempt to register the mark CHANEL for condominium and other real-estate services on grounds of dilution. Following the submission of extensive evidence, the TTAB found CHANEL to be a household name and that the fame preceded any use of the mark by applicant.

The Board sustained, in part, the Firm's opposition, filed on behalf of IKEA, to the registration of AKEA for retail direct sales services in the field of nutritional supplements, finding a likelihood of confusion.

The court granted the Firm's motion to dismiss the case, based on lack of subject matter jurisdiction, because the allegedly infringing acts occurred in Mexico and other Central and South American countries. The court held that foreign websites that can be seen in Florida were not sufficient to give the court subject matter jurisdiction, nor was one shipment to Florida by a non-party dealer. The court did not give the plaintiff leave to replead.

On behalf of Plaintiff Regulatory Fundamentals Group LLC (“RFG”), we and our co-counsel defeated the Defendants’ motion for summary judgment seeking dismissal of RFG’s copyright infringement and copyright management information claims based on Defendants’ use of RFG’s copyrighted works beyond the terms of a limited copyright license. The Court eventually entered judgment in RFG’s favor due to Defendants’ massive spoliation of evidence and awarded RFG attorneys’ fees and costs amounting to $366,099.81.

The Firm successfully defeated a motion for a preliminary injunction motion on behalf of client Athleta, Inc., a leading retailer of women’s performance apparel and gear and part of The Gap, Inc.’s portfolio of companies. Plaintiff Body Wisdom Media, Inc. sought a preliminary injunction to stop Athleta’s use of a pinwheel design as a logo, alleging likelihood of confusion with Body Wisdom’s own pinwheel design logo used in connection with fitness DVDs. Athleta had adopted the challenged pinwheel logo seven years prior and had used it across its business since that time. The U.S. District Court in Maryland denied Body Wisdom’s motion, ruling that Body Wisdom was not likely to succeed on the merits of its infringement claim, because, inter alia, the parties’ goods are different and had coexisted under the respective marks without confusion for a number of years. The court also held that any injunction would harm Athleta, which uses the challenged pinwheel design across its entire business.

The Firm obtained a preliminary injunction on behalf of Kraft Foods Group Brands, LLC , owner of the CRACKER BARREL trademark in connection with cheese, against restaurant company, Cracker Barrel Old Country Stores, Inc. and prominent meat distributor, John Morrell & Co. The decision was affirmed by the U.S. Court of Appeals for the Seventh Circiut.

The Firm secured summary judgment on behalf of Cabot Company Limited d/b/a Cabot Watch Company, a United Kingdom company that specializes in CWC brand British military wristwatches, against Combat Watch Company in a cancellation proceeding before the Trademark Trial and Appeal Board. Cabot has been importing and selling military-grade CWC wristwatches in the United States for more than 15 years, but had not registered the mark with the United States Patent and Trademark Office.

On behalf of Gap, Inc., successfully obtained dismissal of a copyright action brought by clothing retailer Fooey Inc. in the U.S. District Court for the Northern District of Illinois. On Gap's motion to dismiss under Fed. R. Civ. P. 12(b)(6), the Court determined that "no ordinary observer . . . could reasonably conclude that defendant misappropriated plaintiff's protectable expression," and that the works in question “each . . . impresses upon the ordinary observer its own distinct 'total concept and feel.'"

The Firm successfully represented our client, McNeil-PPC, Inc., a subsidiary of Johnson & Johnson and the exclusive licensee of the ZYRTEC mark for allergy products in the United States, in a five-year challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to Walgreen Co.’s attempt to register the mark WAL-ZYR in connection with an allergy product containing the identical active ingredient to ZYRTEC.

The Firm was successful in obtaining a preliminary injunction for our client, Athleta, Inc., a subsidiary of Gap Inc., against Pitbull Clothing Co. and Cory Peck, operators of the website athletica.net.

On behalf of our client The Gap, Inc., the Firm successfully defeated an emergency motion for a temporary restraining order and a second motion for a preliminary injunction brought by plaintiffs Jumbo Bright Trading Limited and Charles Pozzi against Gap's offering and sale of certain women's loafers.

The Firm successfully represented our client, Frank Sinatra Enterprises, LLC, which holds the exclusive right to commercially exploit Mr. Sinatra’s name and likeness, in its challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to Michigan-based caterer Bill Loizon’s attempt to register the mark FRANKS ANATRA in connection with his catering business.

The firm successfully defended our clients, The Gap, Inc., Gap International Sourcing, Inc., Old Navy, LLC and Old Navy (Apparel), LLC against a trademark infringement and unfair competition action brought by Robert Lopez, who prints and sells t-shirts and other apparel promoting his neighborhood, the Lower East Side of New York City.

Institute for the Development of Earth Awareness v. People for the Ethical Treatment of Animals
768 F. Supp. 2d 672 (S.D.N.Y. 2011)

The firm obtained summary judgment in favor of client, People for the Ethical Treatment of Animals (“PETA”), dismissing copyright infringement claim brought against PETA in the U.S. District Court for the Southern District of New York on basis of alleged use in PETA animal rights campaign of historical facts and not-new idea of comparing mistreatment of slaves in 19th century America to mistreatment of animals today.

We successfully represented Edgar Rice Burroughs, Inc. (ERB)--successor to the famous author of the Tarzan and John Carter of Mars stories--in overcoming an opposition to its application to register the mark JOHN CARTER OF MARS for a variety of toys and games.

The Firm prevailed after trial, winning in excess of $2 million dollars for a copyright infringement claim brought on behalf of client Kam Hing Enterprises, Inc. Prior to trial on damages, in what the Court noted was a rare instance of granting summary judgment to a plaintiff on liability in a copyright infringement case, the Court found the copyrighted works at issue (quilts) strikingly similar, and defendants liable for copyright infringement.

On behalf of our client Cadbury Adams USA LLC--maker of the famous DENTYNE brand of chewing gum--we defeated a motion for a preliminary injunction brought by plaintiff which sought to block the launch of Cadbury's new breath purifying gum, DENTYNE PURE, on the grounds that the name DENTYNE PURE was confusingly similar to plaintiffs' MENTOS PURE FRESH and MENTOS PURE WHITE names used for chewing gum.

On behalf of Lacoste, the owner of the famous alligator logo, the Firm filed an opposition to Maxoly’s application to register a mark consisting of the words COLBA ISLAND and a similar alligator logo for clothing. Following a trial, the Board sustained the Firm's opposition, holding that, in view of the fame of the Lacoste mark and similarity of the marks and goods, Maxoly’s mark was likely to cause confusion.

Following a trial, the court held that the defendant infringed the copyrights in our client's popular Spin Trophy, by selling a trophy that court found "strikingly similar" to the Spin Trophy. The judgment permanently enjoins the defendant from selling the infringing trophy and orders it to pay Crown its profits from the infringement. In July, 2008, the Court granted our motion to recover attorneys' fees. The Court said that Crown and the Firm "prevailed in every stage of the litigation" and that Crown was entitled to recover its legal fees in full. The Court went on to write that "Fross Zelnick hourly rates for legal services have repeatedly been found to be fair by courts evaluating them," and that "as a result of Fross Zelnick's expertise in the field of copyright law, it does not expend extra time to understand the issues involved in a copyright case, and therefore spends only a reasonable number of hours to litigate the case." On April 21, 2009, the U.S. Court of Appeals for the Second Circuit affirmed the district court ruling on infringement and damages, as well as the award of Crown's attorneys' fees.

On behalf of documentary filmmaker defendants, the Firm successfully defended appeal of lower court's dismissal of plaintiffs' defamation claims for lack of personal jurisdiction. The appellate court also affirmed lower court's dismissal on merits of plaintiffs' claims against codefendants arising out of allegedly defamatory statements in Dateline NBC telecast entitled "Rescue or Ripoff," which investigated whether plaintiff Doug Copp was a hero or had sought to capitalize on the 9/11 tragedy by gaining access to Ground Zero under false pretenses, and by obtaining $600,000 payment from 9/11 Victim Compensation Fund for illnesses supposedly caused by exposure to toxic chemicals at Ground Zero.

UMG Recordings, Inc. v. O'Rourke
92 U.S.P.Q.2d 1042 (T.T.A.B. 2009)

On behalf of UMG Recordings, Inc., owner of the world-famous MOTOWN mark and music label, we successfully opposed the applicant's attempt to register MTOWN CLOTHING (and design) as a trademark for clothing.

The firm was part of the defense team for clients Time Warner Inc., Warner Communications, Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc. and DC Comics in the ongoing litigation in the U.S. District Court for the Central District of California over the copyright termination interest in certain works featuring the Superman and Superboy characters allegedly owned by the heirs of co-creator, Jerry Siegel. The decisions in which the firm was involved resulted in a number of significant decisions in the complex area of copyright termination and in other areas, relating to, inter alia, defenses to termination claims of work made for hire, co-ownership, derivative work exception, limitation of copyright termination recapture to U.S. rights under copyright and inapplicability of copyright termination to trademark rights; res judicata; jury trial right, and the fair market value of copyright rights in the entertainment arena, among others. Summaries of decisions and links can be found by clicking through "view case history" above.

In a trademark case concerning the ENTREPRENEUR OF THE YEAR mark, the Firm won a motion to dismiss declaratory judgment action against one Ernst & Young ("E&Y") party for lack of personal jurisdiction, and won motion to transfer the action against the remaining E&Y parties and consolidate with E&Y's infringement action in New York, ultimately leading to a favorable settlement for our clients.

The firm successfully concluded its representation of Timex Corporation in its defense against copyright and trademark infringement claims brought against it by Polar Bear Productions, Inc. In 2002, when our firm first became involved in the case, Polar Bear had been awarded a $2.415 million jury verdict for Timex's copyright infringement of a kayaking video entitled "PaddleQuest." We took over the appeal, and, in 2004, the Ninth Circuit vacated the entire $2.1 million award under Section 504(b) of the Copyright Act of Timex's profits allegedly attributable to the copyright infringement as unduly speculative and cut the damage award from $315,000 to $115,000 on the same grounds. The case was then remanded to the district court on Polar Bear's remaining trademark claims. Upon Timex's motion, the court dismissed all of Polar Bear's remaining trademark claims, and Polar Bear appealed the dismissal of its claims to the Ninth Circuit. The Ninth Circuit, in an unpublished opinion dated July 21, 2007, affirmed final dismissal of the case.

The firm prevailed a motion to strike a jury verdict against its clients, the German grinding machine company, Overbeck GmbH, its parent, the Spanish cooperative, Danobat S. Coop., and its U.S. affiliate, Danobat Machine Tool Co., Inc., in the U.S. District Court for the Eastern District of New York. After a full trial, in which plaintiff was forced to drop most of its nine causes of action, and defendants successfully moved in limine to dismiss all of plaintiff's claims for monetary damages because of its discovery abuses, the jury nevertheless found for plaintiff, a local company. Prior to the verdict, defendants timely moved to strike plaintiff's jury demand, and they renewed this motion thereafter. The court granted the motion, deeming the jury decision against defendants merely advisory.

In case of first impression involving restored copyrights in works of foreign authors, won affirmance of preliminary injunction on behalf of owner of U.S. copyright in the famous Good Luck Troll doll against distributor of Wish-nik dolls, successfully arguing that defendant was not a reliance party entitled to continue selling copies of the Good Luck Troll because 9-year gap in sales showed it did not make continuous exploitation of the work from before it was restored.

On behalf of Rhino Entertainment and members of the BeeGees music group, we recovered the BEEGEE.COM and BEEGEES.COM domain names in Uniform Domain Name Dispute Resolution Policy ("UDRP") proceedings from owners that were using the names for websites linking to BeeGees-related sites (and other sites) of third parties to generate advertising or "click through" revenue for the registrants.

We were brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. Before we became involved in the case, our client, a nonprofit charitable foundation, was found liable for copyright infringement based on the defendant's use in its Classic Arts Showcase television programming of a short clip from the 1947 movie Carnegie Hall. The plaintiff sought a finding of willful infringement, which would have permitted an award up to $150,000.00. But we persuaded the jury that our client did not act willfully, and the jury awarded only $6,700.00 to the plaintiff. This judgment was cut in half by an award of costs to our client because the judgment did not exceed the Rule 68 Offer of Judgment made on our client's behalf immediately upon our entering the case.

The firm secured a decision in favor of The Tea Board of India, owner of the DARJEELING geographic certification mark for tea, in its opposition against a trademark application for DARJEELING NOUVEAU, covering tea, of Republic of Tea. In a 61-page decision, the Trademark Trial and Appeal Board upheld the opposition and denied Republic of Tea's counterclaim for cancellation in which it argued that our client's DARJEELING mark was generic.

In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, 17 U.S.C. § 304 (d), the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court's decision rejecting an attempt by Disney and Clare Milne to cut off client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The court held that Milne could not terminate a 1930 grant where the parties in 1983 had mutually revoked that grant and substituted a new one that was not subject to termination for significantly increased compensation to the author's heirs. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, on the same theory we also successfully obtained a dismissal for Slesinger of an attempted termination action brought by the granddaughter of the illustrator of the Pooh works.

The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.

The U.S. Court of Appeals for the Federal Circuit affirmed a successful opposition brought by our client, Veuve Clicquot Ponsardin, in the Trademark Trial and Appeal Board in which it claimed that VEUVE ROYALE is confusingly similar to VEUVE CLICQUOT, and held that VEUVE CLICQUOT is a famous mark.

We won summary adjudication on behalf of defendants, The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc., in an idea submission case brought by two individuals in Los Angeles Superior Court.

We defeated a preliminary injunction motion on behalf of well-known restaurateur, Jeffrey Chodorow, and his company. The plaintiffs, who operated a neighboring restaurant featuring the Japanese cuisine of chef Tadashi Ono, sought to prevent Chodorow from opening a Japanese restaurant named ONO in the newly opened Hotel Gansevoort in New York City's meatpacking district.

The U.S. Court of Appeals for the Second Circuit affirmed the trial decision in favor of Edgar Rice Burroughs, Inc., owner of all existing rights in the Tarzan character, that two Tarzan books published in 1972 and 1976 illustrated by artist Burne Hogarth were works for hire owned by Burroughs, notwithstanding erroneous registrations stating that Hogarth was the author of the works. Hogarth's estate also unsuccessfully claimed that Edgar Rice Burroughs had licensed the use of the Hogarth illustrations from the books to Disney for its 1999 animated movie "Tarzan."

We won a decision in the U.S. District Court for the Southern District of New York dismissing a trade dress infringement claim brought against our firm's client, Babelito, an Argentine manufacturer of products for infants, on the ground that the defendant had not been properly served in the United States.

We obtained a preliminary injunction against ice cream company, CoolBrands, on behalf of the firm's client, Frozfruit. The U.S. District Court for the Southern District of New York held that Frozfruit was likely to prevail on the merits of its claim that CoolBrands' re-designed packaging for its frozen fruit bar was an infringement of the Frozfruit trade dress.

We defeated a motion for summary judgment filed by the lock manufacturer, Kryptonite Corporation. In ruling for DC Comics, the U.S. District Court for the Southern District of New York held that DC Comics owns strong rights in the KRYPTONITE mark, based upon its consistent use with Superman over the past 60+ years.

The Trademark Trial and Appeal Board sustained our opposition on behalf of Wyeth to an application to register FEMPRO for use in connection with feminine hygiene products, on the basis that it was confusingly similar to PREMPRO for use in connection with prescription medication to treat symptoms of menopause.

We successfully defended an appeal in the California Court of Appeal of Edgar Rice Burroughs, Inc.'s lower court victory dismissing the claims of American First Run Studios. American First Run had claimed that Disney's 1994 animated "Tarzan" movie under license from Edgar Rice Burroughs "the owner of all rights in the Tarzan character" was copied from and substantially similar to American First Run's earlier authorized live-action Tarzan television programs, even though the only similarities were the common presence of the pre-existing appearance of Edgar Rice Burroughs's Tarzan character.

We won summary judgment on behalf of Movado in the U.S. District Court for the Southern District of New York on April 9. Swatch alleged that its rights in its VENTURA mark, which it uses under its Hamilton line of watches, were infringed by Movado's use of the mark VENTURE, which Movado uses in connection with its ESQ line of watches.

Defeated a motion for a preliminary injunction brought by a Long Island-based electronics company against Sony Electronics in an action involving use of the mark MG in connection with digital copyright management software.

Successfully defeated a preliminary injunction motion brought by The Echo Design Group, Inc., a fashion and home accessories manufacturer, against Zino Davidoff S.A., Davidoff & Cie S.A., Davidoff of Geneva (NY), Inc., Coty Inc., and Lancaster Group LLC to prevent the US launch of ECHO DAVIDOFF, a new fragrance line.

On behalf of Jennifer Lopez and Coty Inc., defeated a motion for a preliminary injunction brought by Glow Industries in the United States District Court for the Central District of California. The motion sought to block the launch of the GLOW BY J.LO fragrance line. Subsequently defeated motion for summary judgment in which Glow Industries sought to invalidate acquisition of GLOW KIT mark and declaration of non-infringement.

Plaintiff owned the trademark Field & Stream for publications, and defendant owned the Field & Stream trademark for clothing and other products. The parties had co-existed for decades and had more recently entered into concurrent use and settlement agreements specifying the products reserved to each. We won summary judgment dismissing plaintiff's trademark infringement claims seeking to invalidate the concurrent use agreements based on allegations of breach of contract and likelihood of public confusion. At a trial on defendant's counterclaim for breach of a covenant not to sue, we won a judgment of $1.8 million which was affirmed by the U.S. Court of Appeals for the Second Circuit.

We won summary judgment on First Amendment and other grounds dismissing plaintiff's U.S. Trademark Act claims of likelihood of confusing arising out of the parodic inclusion in DC Comics' "Flex Mentalo" comic books of a copy of the well known and often-mocked Charles Atlas "Hero of the Beach" body building course ad which did not have copyright protection.

We obtained permanent injunctive relief against several Internet watch counterfeiters, as well as for other famous brand watches. Although these defendants defaulted, we were able to convince the judge at a damages hearing (based on the purchase of one counterfeit watch from each site, and on one site owner's continuing activities and attempts to avoid being tracked down), to issue the money judgments.

We successfully recovered the domain name JANETJACKSON.COM in this in rem action under the Anticybersquatting Consumer Protection Act.

Burroughs v. MGM
98 Civ. 7448 (S.D.N.Y. 2000)

We represented the heirs of Edgar Rice Burroughs in the first case interpreting the 1976 Copyright Act's termination provisions. The decision required editing MGM's 1981 remake of its 1932 film Tarzan, The Apeman, but then held that the edited version did not contravene the provision of a 1931 motion picture license requiring MGM to adhere to the original story in exercising the right granted to it to remake the original production of this film and did not violate the Burroughs' heirs' rights under the copyright laws' newly enacted provisions allowing copyright owners to terminate prior grants.

We successfully represented the plaintiff in a case of first impression in the Second Circuit on the issue of when a trademark, "Lane," is primarily merely a surname. In affirming the District Court's grant of summary judgment enjoining the defendant from using the Lane Capital Management name, the Second Circuit set the standard for determination of the surname issue.

We represented Carvel Corporation in its successful opposition against a former licensee's attempt to register the mark THE ICE CREAM BAKERY. The applicant argued that Carvel had abandoned THE ICE CREAM BAKERY through naked licensing, because Carvel's licensee's use of the mark was not identical to Carvel's use. The Board held that although the uses were not identical, there was no abandonment where Carvel had the contractual right to inspect its current licensee and had done so numerous times, and where the applicant itself admitted that consumers continued to associate the mark THE ICE CREAM BAKERY with Carvel.

In a case of first impression, we successfully argued that in a federal court action seeking to cancel the defendant's trademark registration, the applicable factors to be applied are those established by the Federal Circuit, not the likelihood of confusion factors applied in an infringement analysis.

Working with Indian counsel, we successfully represented Whirlpool before the Supreme Court of India in an action seeking the removal of a registration for the WHIRLPOOL trademark from the Registry of Trademarks in India.

The court granted the motion for summary judgment we filed on behalf of Davidoff, a maker of premium cigars. JR used Davidoff's trademarks in advertising for "JR Alternative" cigars, which JR claimed duplicated famous brands. Davidoff asserted that the use of its trademarks in JR's ads constituted trademark infringement and that JR's advertising claims were false.

In 7 year litigation successfully represented widow of artist Patrick Nagel who won ownership in trial and on appeal of more than half of 338 copyrights at issue for paintings reproduced in Playboy magazine in 1974-84 period. Artist's widow won ownership on the ground that the Playboy payment check endorsements for these works did not constitute valid work made for hire agreements or transfers of the artist's copyrights under the 1976 Copyright Act.

We successfully tried the NBA's "hot news" misappropriation claim arising out of defendants'unauthorized transmissions on an AOL online site and via a Motorola hand-held beeper product (the "Sports Trax") of game statistics on a real-time basis, i.e., while the games are still in progress. We also served in an of counsel capacity to the NBA in the appeal in which the Second Circuit reversed the district court's ruling.

In one of the more humorous decisions in recent memory, we successfully established the rights of the Muppets to poke fun at "SPAM" luncheon meat by naming a wild boar Muppet character "Spa-am" in the movie "Muppet Treasure Island" and on movie merchandise.

We successfully brought the first case under the Uruguay Round GATT amendments to the US Copyright Act to stop unauthorized copying of the works of Dutch artist, M.C. Escher, for which U.S. copyright protection had been restored.

We represented the BBC in securing dismissal for forum non conveniens of an action for copyright infringement and unfair competition brought in US against the BBC by a British subject with respect to BBC television character "Mr. Blobby."

We successfully represented the Russ Berrie defendants who were sued for violation of plaintiff's alleged "trade dress" rights in a line of troll dolls based upon the original Dam troll doll for which copyright protection was lost in 1965 due to publication without copyright notice. The Second Circuit affirmed dismissal of all of plaintiff's trade dress claims and reversed and then also dismissed plaintiff's false advertising claim arising out of use of Russ Berrie's copyright notice on its new versions of the original troll dolls.

We established PepsiCo, Inc.'s ownership of world famous STOLICHNAYA mark for vodka following dissolution of former U.S.S.R. and obtained preliminary injunction and later a final judgment against an infringer acting under the authority of officials of a former Soviet state.

Anheuser-Busch, Inc. v. Balducci
28 F.3d 769 (8th Cir. 1994)

In this action by our client Anheuser-Busch over misuse of the MICHELOB trademark in what the defendants claimed was a parody advertisement, the Eighth Circuit reversed a district court decision holding the ad was protected by the First Amendment.

Our client, the producer of the "Twin Peaks" television series, brought suit for copyright and trademark infringement against the publisher of an unauthorized trivia book about the series. The district court found that the defendant was a willful infringer, and the Second Circuit affirmed.

In a frequently cited case that established the proposition that famous marks are entitled to strong protection, we successfully opposed competitor's application to register mark FUNDOUGH due to potential confusion with Parker's mark PLAY-DOH.

Coors claimed that television and radio commercials run by our client Anheuser-Busch stating that Coors' beer was shipped in railroad tankers and diluted with local water, disparaged its beer. The court denied Coors's motion for a preliminary injunction and allowed the commercials to continue running because of Coors' failure to show literal or implied falsehood, bad faith, or that the commercials were materially misleading.

Pump, Inc. v. Collins Management
746 F. Supp. 1159 (D. Mass. 1990)

In one of the only decisions of its kind, the district court ruled in favor of our clients in finding that there was no likelihood of confusion when the identical mark "Pump" was used as the name of an album by our client, the rock band, Aerosmith, and as the name of a lesser-known band.

We established the point that defendant's joint authorship with plaintiff of an underlying medical work did not entitle him to claim copyright co-ownership or fair use of the material newly added by plaintiff to derivative work based on the co-authored underlying work where the defendant had not participated in preparing the new material to update the original work.

Jane Ring v. Estee Lauder, Inc.
874 F.2d 109 (2d Cir. 1989)

We obtained summary judgment for defendant in a decision that clarifies the circumstances under which confidentially disclosed information loses its protectable character.

The Nation magazine, without authorization, had copied portions of former President Gerald Ford's unpublished memoirs. In this landmark case involving the fair use doctrine, the U.S. Supreme Court's 1985 decision to reinstate the district court decision for the plaintiffs remains the seminal copyright fair use case under the 1976 Copyright Act. Roger Zissu won the case at trial, establishing that the unpublished status of a work narrows the scope of permissible fair use of a work and that a news reporting purpose alone does not justify excessive copying under the fair use doctrine.

We represented American Express, obtaining a summary judgment of dismissal of plaintiff's copyright claims against that company, but a multi-million dollar jury verdict was ultimately returned against the other remaining defendants.

This trial decision, involving DC Comics', "Plasticman" and "Aquaman" characters, has gone further than any other in upholding and broadening character protection under the U.S. Trademark Act by holding the ingredients of entertainment characters to function as symbols of origin that can be protected from unauthorized copying. After the jury awarded DC $1.2 million, it accepted a remittitur lowering the damage award.

Inwood Laboratories v. Ives Laboratories
456 U.S. 844 (1982)

The U.S. Supreme Court established standards for contributory infringement and functionality in trademark cases in this case involving the appearance of the prescription drug capsules of Cyclosposmol.

Warner Bros., Inc. v. Gay Toys, Inc.
658 F.2d 76 (2d Cir. 1981)

We took the U. S. Trademark Act further to prohibit the unauthorized use of an orange Dodge Charger, an element of Warner Bros.' successful television series "The Dukes of Hazzard."

We began a series of cases in which we expanded protection for entertainment properties under Section 43(a), The U.S. Trademark Act's unfair competition provision. In this decision, the Court prohibited the unauthorized use of the term "Daily Planet," a well known ingredient in plaintiff's "Superman" stories and comic books.

We obtained an order transferring the domain names VEUVECLICQUOT.COM and .NET to our client.

Yue-Sai Kan, et al. v. Gong Gen Yan, et al.
WIPO Case No. D2001-0548

We successfully represented noted Chinese-American entrepreneur and television personality Yue-Sai Kan in obtaining an order transferring to her several domain names consisting of variations of her name from a cybersquatter located in China.

On behalf of Hublot of America, LVMH Moet Hennessy Louis Vuitton and related companies, the firm successfully obtained summary judgment dismissing Plaintiff Solid 21, Inc.’s trademark infringement case, which it brought based on Plaintiff’s ownership of a federal trademark registration for RED GOLD. The Court found the designation RED GOLD to be generic for jewelry and watches made of high copper content gold, and ordered Plaintiff’s federal trademark registration for RED GOLD canceled. The suit was brought in the U.S. District Court for the Central District of California.